Trials@uspto.gov
`571-272-7822
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`Paper 57
`Entered: June 26, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION AND ZTE (USA) INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00139
`Patent 7,269,576 B2
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 1
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`
`A.
`
`Introduction
`
`I. BACKGROUND
`
`On February 12, 2013, Petitioner (“ZTE”) filed a Petition for inter
`
`partes review of claims 1-36 of U.S. Patent No. 7,269,576 B2 (“the ’576
`
`patent”). Paper 2. Petitioner filed a Revised Petition (“Pet.”) on February
`
`15, 2013.1 Paper 9. On July 9, 2013, the Board instituted trial for claims 18-
`
`21, 25-28, and 31-36, under 35 U.S.C. § 102(b), as anticipated by European
`
`Patent Publication 0 268 139 (“EP ’139”). Paper 15 (“Dec.”).
`
`After institution of trial, Patent Owner (“ContentGuard”)2 filed a
`
`Patent Owner Response (Paper 33, “PO Resp.”), and did not file a Motion to
`
`Amend Claims. ZTE subsequently filed a Reply. Paper 39 (“Reply”).
`
`A consolidated oral hearing for IPR2013-00133, IPR2013-00137,
`
`IPR2013-00138, and IPR2013-00139, each involving the same Petitioner
`
`and Patent Owner, was held on February 26 and 27, 2014. The transcript of
`
`the consolidated hearing has been entered into the record. Papers 54-56.
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 318(a).
`
`
`
`1 Hereinafter, all use of the term “the Petition” in this decision refers to the
`Revised Petition unless indicated otherwise.
`
` 2
`
` The mandatory notices filed pursuant to 37 C.F.R. § 42.8(b)(1) indicate
`that ContentGuard Holdings, Inc. and Pendrell Corporation are real parties-
`in-interest. Paper 11, 2.
`
`
` 2
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 2
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`
`Claims 18-21, 25-28, and 31-36 of the ’576 Patent have not been
`
`proved unpatentable.
`
`B.
`
`Related Proceedings
`
`
`
`ZTE indicates that the ’576 patent is involved in co-pending litigation
`
`titled ContentGuard Holdings Inc. v. ZTE Corp. et al., No. 3:12-cv-01226
`
`(S.D. Cal.). Pet. 1. ZTE also filed five other petitions seeking inter partes
`
`review of the following patents of ContentGuard: U.S. Patent No. 7,523,072
`
`(IPR2013-00133); U.S. Patent No. 7,225,160 (IPR2013-00134); U.S.
`
`Patent No. 7,359,884 (IPR2013-00136); U.S. Patent No. 6,963,859
`
`(IPR2013-00137); and U.S. Patent No. 7,139,736 (IPR2013-00138). Id.
`
`C.
`
`The ’576 Patent
`
`The subject matter of the ’576 patent relates to the distribution of
`
`digitally encoded works and the enforcement of usage rights. Ex. 1001,
`
`1:5-6. According to the ’576 patent, an issue facing the publishing and
`
`information industries is how to prevent the unauthorized and unaccounted
`
`distribution or usage of electronically published materials. Id. at 1:10-13. In
`
`particular, a major concern, according to the ’576 patent, is the ease with
`
`which electronically published works can be “perfectly” reproduced and
`
`distributed. Id. at 1:24-25. According to the ’576 patent, one way to curb
`
`unaccounted distribution is to prevent unauthorized copying and
`
`transmission. Id. at 1:44-46. Another way, according to the ’576 patent, is
`
`to distribute software which requires a “key” to enable its use. Id. at 1:60-
`
`61. The ’576 patent discloses that, although such distribution and protection
`
`schemes prevent unauthorized distributions, they do so by sacrificing the
`
` 3
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 3
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`potential for subsequent revenue bearing uses. Id. at 2:56-60. For example,
`
`the ’576 patent discloses that it may be desirable to allow the lending of a
`
`purchased work to permit exposure of the work to potential buyers, permit
`
`the creation of a derivative work for a fee, or permit copying the work for a
`
`fee. Id. at 2:60-65. The ’576 patent discloses that it solves these problems
`
`by both permanently attaching usage rights to digital works, and by placing
`
`elements in repositories, which store and control the digital works and
`
`enforce the usage rights associated therewith. Id. at 3:53-4:15.
`
`Figure 1 of the ’576 patent is reproduced below:
`
`Figure 1 illustrates the basic operations of the disclosed invention.
`
`
`
` 4
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 4
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`
`According to the embodiment of Figure 1, at step 101, a creator
`
`creates a digital work. Ex. 1001, 7:1-2. At step 102, the creator determines
`
`the appropriate usage rights and fees, attaches them to the digital work, and
`
`stores the digital work with the associated usage rights and fees in
`
`repository 1. Id. at 7:2-7. At step 103, repository 1 receives a request to
`
`access the digital work from repository 2. Id. at 7:7-9. Such a request, or
`
`session initiation, includes steps that help ensure that repository 1 and
`
`repository 2 are trustworthy. Id. at 7:7-12. At step 104, repository 2
`
`requests access to the digital work stored in repository 1 for a stated purpose,
`
`e.g., to print the digital work or obtain a copy of the digital work. Id. at
`
`7:13-17. At step 105, repository 1 checks the usages rights associated with
`
`the digital work stored therein to determine if access to the digital work may
`
`be granted. Id. at 7:17-24. At step 106, if access is denied, repository 1
`
`terminates the session with repository 2 by transmitting an error message.
`
`Id. at 7:24-25. At step 107, if access is granted, repository 1 transmits the
`
`digital work to repository 2. Id. at 7:25-27. At step 108, both repository 1
`
`and 2 generate billing information prior to transmitting the billing
`
`information to a credit server. Id. at 7:27-30. The use of both repositories 1
`
`and 2 for billing prevents attempts to circumvent the billing process. Id. at
`
`7:30-31.
`
`One embodiment described in the ’576 patent relates to enforcing
`
`usage rights in rendering systems. Ex. 1001, 8:16-67. Rendering systems
`
`are systems that can render a digital work into its desired form, such as by
`
`printing a file on a printer or executing a software program in a processor.
`
` 5
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 5
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`Id. at 8:19-22, 8:37-38, 8:53-55. Other examples of rendering systems
`
`include display, video, or audio systems. Id. at 51:65-67. Rendering
`
`systems include repositories that store digital works and maintain the
`
`security features of the ’576 patent. Id. at 8:22-23, 12:25-34. Repositories
`
`in rendering systems can request to perform various usage transactions, such
`
`as play or print transactions, that obtain a digital work from a remote
`
`repository and then provide it to an attached rendering device to be rendered.
`
`Id. at 30:23-35, 36:18-37:26.
`
`Figure 4a of the ’576 patent is reproduced below:
`
`
`
`Figure 4a illustrates an example of a rendering system
`
`According to the embodiment of Figure 4a, printer system (401),
`
`including print device (403) and printer repository (402), is attached to
`
`external repository (404) that contains digital works. Ex. 1001, 8:26-29, 48-
`
`51. The printer repository can obtain a copy of the digital work to be
`
`provided to the rendering device. Id. at 8:36-38. That is accomplished by
`
` 6
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 6
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`invoking a specific type of usage transaction called a print transaction. Id. at
`
`36:55-37:26. A print transaction begins with a requestor repository sending
`
`a message requesting permission to obtain and print a specified digital work
`
`that is stored in a server repository. Id. at 36:55-37:26. Certain rendering
`
`transactions require the presence of a digital ticket or an authorization object
`
`in a repository requesting a digital work before the digital work can be
`
`provided. Id. at 36:45-46, 37:18-19, 31:6-9. Repositories acquire digital
`
`tickets through authorization transactions that request authorization objects
`
`from a remote authorization repository. Id. at 41:31-42:16. If the repository
`
`requesting the digital work is in possession of an authorization object, the
`
`server repository determines whether the requestor is permitted to perform
`
`the transaction based on usage rights related to the digital work. Id. at
`
`36:45-46, 37:18-19, 30:59-31:49. Once the transaction is determined as
`
`being permitted, the digital work is transmitted to the repository requesting
`
`the digital work, and then the digital work is rendered. Id. at 36:47-50,
`
`37:20-22.
`
`D.
`
`Illustrative Claim
`
`
`
`Claim 18 is an independent claim from which claims 19-21, 25-28,
`
`and 31-36 directly or indirectly depend, and is reproduced below:
`
`18. A method for controlling rendering of digital
`content on an apparatus having a rendering engine configured
`to render digital content and a storage for storing the digital
`content, said method comprising:
`
`
` 7
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 7
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`
`specifying rights within said apparatus for digital content
`stored in said storage, said rights specifying how digital content
`can be rendered;
`
`storing digital content in said storage;
`
`receiving a request for rendering of said digital content
`stored in the storage;
`
`is for a permitted
`checking whether said request
`rendering of said digital content in accordance with said rights
`specified within said apparatus;
`
`processing the request to make said digital content
`available to the rendering engine for rendering when said
`request is for a permitted rendering of said digital content;
`
`authorizing a repository for making the digital content
`available for rendering, wherein the digital content can be made
`available for rendering only by an authorized repository, the
`repository performing the steps of:
`
`making a request for an authorization object required
`[sic] to be included within the repository for rendering of the
`digital content; and
`
`receiving the authorization object when it is determined
`that the request should be granted.
`
`Ex. 1001, 53:57-54:16 (emphasis added).
`
`
`II. ANALYSIS
`
`
`
`The only ground instituted for trial is that of the alleged anticipation,
`
`under 35 U.S.C. § 102(b), of claims 18-21, 25-28, and 31-36 by EP ’139
`
` 8
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 8
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`(Ex. 1012). ZTE has to prove unpatentability by a preponderance of the
`
`evidence. 35 U.S.C. § 316(e). In patent law, “the name of the game is the
`
`claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Therefore,
`
`we begin with claim construction, and then follow with specific analysis of
`
`the prior art.
`
`A.
`
`Claim Construction
`
`
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). The terms also are given their ordinary and customary meaning, as
`
`would be understood by one of ordinary skill in the art in the context of the
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). If an inventor acts as his or her own lexicographer, the definition
`
`must be set forth in the specification with reasonable clarity, deliberateness,
`
`and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
`
`1243, 1249 (Fed. Cir. 1998).
`
`
`
`An extraneous limitation should not be read into the claims from the
`
`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`
`the presence of which in a claim is unnecessary to make sense of the claim.
`
`See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994); Renishaw
`
`PLC, 158 F.3d at 1249. The construction that stays true to the claim
`
`language and most naturally aligns with the inventor’s description is likely
`
` 9
`
`
`
`Petitioner Apple Inc. - Ex. 1040, p. 9
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`the correct interpretation. See Renishaw PLC, 158 F.3d at 1250. The
`
`challenge is to interpret claims without unnecessarily importing limitations
`
`from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
`
`Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
`
`repository
`
`
`
`In its petition, ZTE does not provide an explicit construction for
`
`“repository.” In the Patent Owner Preliminary Response, ContentGuard
`
`contended that “repository” should be interpreted as “a trusted system for
`
`supporting usage rights.” Prel. Resp. 21. When instituting trial, we
`
`construed “repository” as “a trusted system which maintains physical,
`
`communications and behavioral integrity, and supports usage rights.”
`
`Dec. 12. For reasons discussed below, we adhere to the same interpretation.
`
`
`
`The specification provides a glossary which recites the following
`
`meaning for “repository”:
`
`Conceptually a set of functional specifications defining core
`functionality in the support of usage rights. A repository is a
`trusted system in that it maintains physical, communications
`and behavioral integrity.
`
`Ex. 1001, 52:1-6 (emphasis added). By setting forth the term in a glossary
`
`and using the verb “is” following “repository” in the second sentence, the
`
`specification sets forth an explicit definition of “repository” as “a trusted
`
`system in that it maintains physical, communications and behavioral
`
`integrity.” The first sentence is also relevant to the definition of “repository”
`
`because it specifies that the repository supports usage rights. Accordingly,
`
`
`
`
`
`
`
`10
`
`Petitioner Apple Inc. - Ex. 1040, p. 10
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`we construe “repository” as “a trusted system which maintains physical,
`
`communications and behavioral integrity, and supports usage rights.”
`
`
`
`Our analysis does not end here. In order to understand “a trusted
`
`system” it is necessary to construe “physical integrity,” “communications
`
`integrity,” and “behavioral integrity.” Those terms are described in a section
`
`of the specification labeled “[r]epositories.” For “physical integrity,” the
`
`specification describes:
`
`Physical integrity refers to the integrity of the physical devices
`themselves. Physical integrity applies both to the repositories
`and to the protected digital works. Thus, the higher security
`classes of repositories themselves may have sensors that detect
`when tampering is attempted on their secure cases. In addition
`to protection of the repository itself, the repository design
`protects access to the content of digital works. In contrast with
`the design of conventional magnetic and optical devices-such as
`floppy disks, CD-ROMs, and videotapes-repositories never
`allow non-trusted systems to access the works directly. A
`maker of generic computer systems cannot guarantee that their
`platform will not be used to make unauthorized copies. The
`manufacturer provides generic capabilities for reading and
`writing information, and the general nature of the functionality
`of the general computing device depends on it. Thus, a copy
`program can copy arbitrary data. This copying issue is not
`limited to general purpose computers. It also arises for the
`unauthorized duplication of entertainment “software” such as
`video and audio recordings by magnetic recorders. Again, the
`functionality of the recorders depends on their ability to copy
`and they have no means to check whether a copy is authorized.
`In contrast, repositories prevent access to the raw data by
`general devices and can test explicit rights and conditions
`before copying or otherwise granting access. Information is
`only accessed by protocol between trusted repositories.
`
`
`
`11
`
`Petitioner Apple Inc. - Ex. 1040, p. 11
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`Ex. 1001, 12:35-61 (emphases added). Much of the above description
`
`makes use of permissive terms such as “may” and “can” and, thus, do not
`
`reflect or indicate a required limitation for physical integrity. The
`
`specification also appears to use the terms or phrases in each of the
`
`following three groups interchangeably:
`
`
`
`
`
`
`
`
`
`1. data, content, digital work, information;
`
`2. non-trusted system, general device; and
`
`3. “never allow access” and “prevent access.”
`
`When referring to the relationship between the repository and data,
`
`the specification uses absolute terms such as “never” and “only.” In light of
`
`the foregoing, we construe “physical integrity” as “preventing access to
`
`information by a non-trusted system.”
`
`
`
`For “communications integrity,” the specification describes the
`
`following:
`
`the
`integrity of
`the
`to
`integrity refers
`Communications
`communications channels between repositories.
` Roughly
`speaking, communications integrity means that repositories
`cannot be easily fooled by “telling them lies.” Integrity in this
`that repositories will only
`case refers
`to
`the property
`communicate with other devices that are able to present proof
`that they are certified repositories, and furthermore, that the
`repositories monitor the communications to detect “impostors”
`and malicious or accidental interference. Thus the security
`measures involving encryption, exchange of digital certificates,
`and nonces described below are all security measures aimed at
`reliable communication in a world known to contain active
`adversaries.
`
`
`
`
`
`
`
`12
`
`Petitioner Apple Inc. - Ex. 1040, p. 12
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`Ex. 1001, 12:62-13:7 (emphases added). We construe “communications
`
`integrity” as “only communicates with other devices that are able to present
`
`proof that they are trusted systems, for example, by using security measures
`
`such as encryption, exchange of digital certificates, and nonces.” The
`
`Encyclopedia of Cryptography defines “nonce” as “[a] number used in a
`
`cryptographic protocol to indicate the unique character of a message.”
`
`ENCYCLOPEDIA OF CRYPTOGRAPHY 197 (1997) (Ex. 3001).
`
`
`
`For “behavioral integrity,” the specification describes:
`
`Behavioral integrity refers to the integrity in what repositories
`do. What repositories do is determined by the software that
`they execute. The integrity of the software is generally assured
`only by knowledge of its source. Restated, a user will trust
`software purchased at a reputable computer store but not trust
`software obtained off a random (insecure) server on a network.
`Behavioral integrity is maintained by requiring that repository
`software be certified and be distributed with proof of such
`certification, i.e. a digital certificate. The purpose of the
`certificate is to authenticate that the software has been tested by
`an authorized organization, which attests that the software does
`what it is supposed to do and that it does not compromise the
`behavioral integrity of a repository. If the digital certificate
`cannot be found in the digital work or the master repository
`which generated the certificate is not known to the repository
`receiving the software, then the software cannot be installed.
`
`Ex. 1001, 13:8-33 (emphases added). We construe “behavioral integrity” in
`
`the context of a repository as “requiring software to include a digital
`
`certificate in order to be installed in the repository.”
`
`
`
`The record is not without evidence in contrary to our interpretation.
`
`That is not unusual. The nature of interpretation is to come to the
`
`
`
`13
`
`Petitioner Apple Inc. - Ex. 1040, p. 13
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`appropriate conclusion in light of all of the evidence. All of the evidence
`
`does not have to point uniformly in a single direction.
`
`
`
`For instance, the specification in Table 2 indicates ten different levels
`
`of security for repositories, and the lowest level, i.e., level “0,” is described
`
`as follows:
`
`Open system. Document transmission is unencrypted. No
`digital certificate is required for identification. The security of
`the system depends mostly on user honesty, since only modest
`knowledge may be needed to circumvent the security measures.
`The repository has no provisions for preventing unauthorized
`programs from running and accessing or copying files. The
`system does not prevent the use of removable storage and does
`not encrypt stored files.
`
`Ex. 1001, 15:30-41. Thus, according to Table 2, repositories are not all
`
`trusted systems. Level “0” security means having an open system lacking in
`
`physical, communications, and behavioral integrity, and without support for
`
`managing usage rights. That is directly contrary to the meaning of
`
`“repository” as defined in the glossary. For reasons discussed below, we
`
`adhere to the definition provided in the glossary. The contrary evidence
`
`based on level “0” security shown in Table 2 is insufficient to outweigh the
`
`rest of the evidence including, in particular, the explicit definition provided
`
`in the glossary. We make our determination based on the totality of the
`
`evidence.
`
`
`
`As noted above, the disclosed invention is about distribution of and
`
`usage rights enforcement of digital works. The problems described in the
`
`background portion of the specification concerns unauthorized and
`
`
`
`14
`
`Petitioner Apple Inc. - Ex. 1040, p. 14
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`unaccounted distribution or usage of electronically published materials.
`
`Ex. 1001, 1:24-43. The ’576 patent states that it solves preexisting problems
`
`by both permanently attaching usage rights to digital works and placing
`
`elements in repositories which enforce those usage rights. Ex. 1001, 3:53-
`
`4:15.
`
`
`
`Here, the definition set forth in the glossary for “repository” is
`
`consistent with the description of the acknowledged prior art, and the
`
`objective or goal to be achieved by the invention of the ’576 patent. The
`
`specification also contains detailed preferred embodiments utilizing
`
`repositories, which are trusted systems to provide usage control for digital
`
`works. Ex. 1001, 12:25-34, 26:20-44, 43:36-50:26.
`
`
`
`The bulk of the disclosure consistently is directed to repositories
`
`which are trusted systems for providing usage control for digital works. For
`
`example, the specification states:
`
`invention are
`the present
`The enforcement elements of
`embodied in repositories. Among other things, repositories are
`used to store digital works, control access to digital works, bill
`for access to digital works and maintain the security and
`integrity of the system.
`
`Ex. 1001, 6:50-54 (emphasis added). Other references to “repository” in the
`
`specification that recite necessary features of repositories also support the
`
`definition in the glossary that a repository is a trusted system:
`
`The core repository services 1302 comprise a set of functions
`required by each and every repository. The core repository
`services 1302 include the session initiation transactions which
`are defined in greater detail below. This set of services also
`includes a generic ticket agent which is used to “punch” a
`
`
`
`15
`
`Petitioner Apple Inc. - Ex. 1040, p. 15
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`
`digital ticket and a generic authorization server for processing
`authorization specifications.
`
`Ex. 1001, 14:45-51 (emphasis added). In another example, the specification
`
`discloses that “[a]s a prerequisite to operation, a repository will require
`
`possession of an identification certificate,” and that “identification
`
`certificates 1306 are required to enable the use of the repository.” Ex. 1001,
`
`13:42-44, 14:56-57. Indeed, by using words such as “require” and
`
`“required,” such examples amply support the definition provided in the
`
`glossary that a repository is a trusted system.
`
`
`
`In summary, even applying the rule of broadest reasonable
`
`construction consistent with the specification, the weight of the evidence
`
`supports the definition provided in the glossary. We regard as significant
`
`that the definition states in an unequivocal manner that a repository “is a
`
`trusted system.”
`
`
`
`According to ContentGuard, our interpretation of “repository” is
`
`incorrect because it is too broad in one respect and too narrow in another.
`
`PO Resp. 8-11. For reasons discussed below, however, the specification of
`
`the ’576 patent does not support adequately either contention. On the record
`
`before us, we are unpersuaded by ContentGuard’s contentions.
`
`
`
`We address below, in turn, first the contention that our construction is
`
`too broad, and then the contention that our construction is too narrow.
`
`1.
`
`
`
`ContentGuard contends that our construction regarding “behavioral
`
`integrity” as “requiring software to include a digital certificate in order to be
`
`installed in the repository” is “excessively broad” unless the software is
`
`
`16
`
`Petitioner Apple Inc. - Ex. 1040, p. 16
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`limited to that which makes the repository operative—software which
`
`ContentGuard believes is referred to in the specification as “repository
`
`software.” Id. at 8. We reproduce ContentGuard’s argument, in more detail,
`
`below:
`
`[The Board’s construction] is too broad because it is not
`restricted to what the ’576 patent refers to as “repository
`software”—that is software that makes the repository operative.
`(See Ex. 1001, 13:14-17.) According to the ’576 patent
`Specification, “[b]ehavioral integrity refers to the integrity in
`what repositories do.” (Ex. 1001, 13:8-9.) What repositories
`do, in turn, “is determined by the software that they execute.”
`(Id., 13:9-10)
`
`But not all software relates “to the integrity in what
`
`repositories do.” (Id., 13:8-9) Repositories, along with usage
`rights, are used to manage the use and distribution of digital
`content. (E.g., Ex. 1001, 4:6-7, 6:50-54, 12:25-33, 52:1-6.)
`Allowing them to do so, repositories can perform several
`functions to implement the transmission of content and usage
`rights. (E.g., Ex. 1001, 13:65-14:3.) But content itself does not
`necessarily supply that function to a repository. (Ex. 2013,
`Goodrich Dec., ¶ 41; see also ¶¶ 37-40.) Rather, repository
`software implements the repository functions that are used to
`manage the use and distribution of the content. (Ex. 1001,
`13:51-56, 14:7-10, 34-43.) Thus, since “[b]ehavioral integrity
`refers to the integrity in what repositories do,” the relevant
`software is not any “software . . . to be installed in the
`repository,” but the software the repository uses to manage the
`use and distribution of content.
`
`PO Resp. 8-9.
`
`
`
`On what repositories do, ContentGuard’s argument overlooks and
`
`fails to discuss the portions of the specification which indicate that
`
`
`
`17
`
`Petitioner Apple Inc. - Ex. 1040, p. 17
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`repositories themselves also can be rendering devices which run and execute
`
`the software type digital works, the usage rights of which they control. For
`
`instance, the ’576 patent states the following with regard to software
`
`runnable on a repository:
`
`An Install transaction is a request to install a digital work
`
`as runnable software on a repository. In a typical case, the
`requester repository is a rendering repository and the software
`would be a new kind or new version of a player.
`
`Ex. 1001, 42:18-21 (emphasis added). This disclosure in the specification
`
`does not support ContentGuard’s contention that a repository merely
`
`manages the use and distribution of digital content, such as software, and
`
`does not perform, run, or execute that digital content. The above-quoted
`
`disclosure refers to a digital work that is “runnable software on a
`
`repository,” and states that, in a typical case, the repository asking for the
`
`digital work is itself a rendering repository that identifies the software digital
`
`work not as operating software, but application software. The specification
`
`conveys much information contrary to ContentGuard’s contention.
`
`ContentGuard does not explain such disclosure and does not point to any
`
`testimony of its expert witness that addresses such disclosure.
`
`
`
`Because a repository, itself, may run and execute software the usage
`
`and distribution of which is managed by the repository, it is unpersuasive
`
`that the reference to “repository software” in that portion of the specification
`
`discussing “behavioral integrity” (Ex. 1001, 13:8-33) is restricted to
`
`software that only manages usage rights. Indeed, in the context of installing
`
`software identified as “a new kind or new version of a player,” which does
`
`
`
`18
`
`Petitioner Apple Inc. - Ex. 1040, p. 18
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`not control usage rights, the specification discusses extracting a copy of the
`
`digital certificate for that software (Ex. 1001, 42:31-34), in the same manner
`
`that the specification describes requiring a digital certificate in the digital
`
`work to ensure behavioral integrity of the repository (Ex. 1001, 13:21-24).
`
`Moreover, some repositories are rendering repositories. Ex. 1001, 42:18-21.
`
`“Repository software,” as used in the specification, is broad enough to cover
`
`application software, such as the “player” referenced in column 42, lines 18-
`
`21, of the specification, or what ContentGuard refers to as “operating
`
`software” which enables the repository to regulate usage rights.
`
`
`
`We do not credit the testimony of the expert witness of ContentGuard,
`
`Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his declaration (Ex.
`
`2013). In those paragraphs, Dr. Goodrich opines that in his opinion, a
`
`person of ordinary skill in the art in 1994 would have understood that the
`
`term “repository software” in the ’576 patent identifies and refers to the
`
`operating software of the repository, and not the software digital works the
`
`usage rights of which are controlled by the repository. The testimony is
`
`unpersuasive, because they do not account for the disclosure of the
`
`specification, discussed above, which conveys that some repositories are
`
`themselves rendering depositories which run and execute the software digital
`
`works the rights of which they control, such as a new version of a “player.”
`
`2.
`
`
`
`ContentGuard contends that our construction regarding “behavioral
`
`integrity” as “requiring software to include a digital certificate in order to be
`
`installed in the repository” is “excessively narrow” because it unnecessarily
`
`
`
`19
`
`Petitioner Apple Inc. - Ex. 1040, p. 19
`
`

`

`IPR2013-00139
`Patent 7,269,576 B2
`
`requires the inclusion of a “digital certificate” to ensure behavioral integrity.
`
`PO Resp. 9-10. According to ContentGuard, in order to maintain behavioral
`
`integrity, it is necessary only that the broader purpose of a repository doing
`
`what it is supposed to do is satisfied. Id. at 10.
`
`
`
`ContentGuard’s contention that our construction is too narrow is
`
`inconsequential to the outcome of this proceeding, because a broader
`
`interpretation of “behavioral integrity,” would not render inapplicable any
`
`teaching of the prior art which was applied under the narrower construction.
`
`
`
`We reproduce ContentGuard’s argument, here, in more detail:
`
`The Board’s construction is also too narrow because it
`
`requires “a digital certificate.”
` After explaining
`that
`“[b]ehavioral
`integrity
`refers
`to
`the
`integrity
`in what
`repositories do” and that “[w]hat repositories do is determined
`by the software that they execute,” the ’576 patent says that
`“[t]he integrity of the software is generally assured only by
`knowledge of its source.” (Ex. 1001, 13:10-11.) Although the
`specification does say that “behavioral integrity is maintained
`by requiring that repository software be certified and be
`distributed with proof of such certification, i.e., a digital
`certificate,” the specification continues by explaining the
`broader purpose of the certificate. (Id., 13:14-17.) “The
`purpose of the certificate